IN THE HIGH COURT OF DELHI AT NEW DELHI SUBJECT : TRADE MARK Order Reserved on: Date of Decision: January 29, 2007 CS(OS)No.

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1 IN THE HIGH COURT OF DELHI AT NEW DELHI SUBJECT : TRADE MARK Order Reserved on: Date of Decision: January 29, 2007 CS(OS)No.2749 OF 2000 Prestige Housewares Ltd. & Anr.... Plaintiffs Through: Mr.Hemant Singh with Mr. Sachin Gupta & Mr. Dushyant K. Mahant, Advocates versus Dinesh Gupta & Anr.... Defendants Through:Mr. S.K. Khurana with Mr. Puneet Khurana, Advocates SHIV NARAYAN DHINGRA, J 1. Plaintiff claimed to be a manufacturer of prestige pressure cookers, Kiwi Shoe Polish, Kohinoor contraceptives and paper products running its business activities as TTK Group of Companies. The trademark PRESTIGE was registered in India initially in favour of Prestige Group Ltd, UK on 14th December, 1949 for non electric cooking and kitchen utensils in Class 21. This trademark was assigned in favour of the plaintiffs vide a deed of Assignment on 4th October, Thus, plaintiff Nos. 1 and 2 became owners of the trademark and were using this trademark PRESTIGE for manufacturing and selling pressure cookers in India. They were also marketing the pressure cookers and parts thereof, such as rubber gaskets/seals, metallic safety valves, vent weight valves, handles, etc. in a distinctive, unique and artistic polythene pouch/packaging. Plaintiff claimed to be the owner of copyright in the pouching/packaging materials which, according to the plaintiff, were original artistic work( within the meaning of Section 2(c) of the Copyright Act, 1957) created by the officers of the plaintiff. The plaintiff received information that defendant No.1 proprietor of defendant No.2 were engaged in the business of printing, manufacturing and marketing of counterfeit PRESTIGE pouches as were used by the plaintiffs for marketing their pressure cooker parts. The defendants were carrying on their

2 unlawful activities in a clandestine manner and were basically fly by night operators who were flooding the market with such counterfeit pouches. The pouches were being supplied to and used by manufacturers of counterfeit pressure cooker parts, who passed off spurious and sub-standard cooker parts as genuine merchandise and pressure cooker parts of plaintiff. It was submitted that the defendant were not only printing their counterfeit pouching but also packaging and marketing pressure cooker parts packed in such pouches to retailers in and outside Delhi. On coming to know these activities of defendant, plaintiff engaged an independent trademark investigator Mr. R.K. Sharma and Mr. Sharma found defendants to be in possession of cylinders and dies used for printing the counterfeit pouches. Mr. Sharma represented himself as a decoy purchaser and defendant supplied him one thousand pieces of counterfeit PRESTIGE pouches for a sum of Rs.2,500/- on 5th December, 2000 in presence of Mr. Dasa Ram, Notary Public. The pouches so purchased were in custody of the plaintiff and could be produced in the Court, however, sample pouches have been filed. The printing and manufacturing of these pouches amounted to infringement of copyright and trademark of the plaintiff. The pouches being manufactured by defendant were identical to the genuine PRESTIGE pressure cooker part pouches and were bound to cause confusion and deception on the members of public. The conduct of the defendant was fraudulent and amounted to passing off, infringement of trademark and copyright of the plaintiff. The conduct was also deemed to cause damage to the goodwill and reputation of the plaintiff and defendants desired to trading upon the goodwill and reputation of the plaintiff. The sub-standard and poor quality of said parts marketed by scrupulous vendors, using the pouches manufactured by defendants, could lead to fatal consequence for the consumers by food poisoning as it is the steam pressure inside the cooker which enables the food to cook faster. A defective, sub-standard or poor quality of spare part may also lead to bursting of the cooker. The Plaintiffs submitted that they have no information of quantum of sales of the counterfeit pouches or spare parts under the trademark PRESTIGE by the defendants, so prayed that the Court should direct the defendants to render a true and faithful accounts of profits made by them and pay over to the plaintiffs the same. The plaintiffs also prayed for passing a decree of permanent injunction restraining infringement of trademark, copyright and restraining passing off, of the goods of the defendants as that of the plaintiffs and for passing a decree for delivery of articles and for rendition of accounts. 2. The defendants in their written statement denied that they were carrying on any unlawful activities and also denied that the defendants dealt in printing counterfeit PRESTIGE pouches. It is stated that the defendants did not have the printing machine meant for printing of pouches, which are normally printed on a rotogravier printing machine. The defendant had a small printing press using the

3 flexo printing process. The defendants were incapable of manufacturing or supplying the counterfeit pouches. It was further submitted that the defendants had a machine for making 'Dana' from waste polythene materials and that the defendants purchased waste polythene in which sometimes used/waste pouches of other packing units comes as a waste polythene packets. It was further submitted that the Local Commissioner visited the premises but found only a small flexo machine which cannot manufacture the pouches. The defendants were doing the job work of printing for the customers and they were not printing anything of their own nor marketing or selling any pouches. The defendants did not indulge into any illegal trade activities etc. 3. On 10th October, 2006, learned counsel for defendants made a statement in the Court that they would not print on any packaging materials having a pasting similar to that pasting as reflected in the documents filed by plaintiff showing their trademark and copyright. In view of this statement, this Court decreed the suit of the plaintiff as far as following prayers were concerned: a) A decree for permanent injunction restraining the defendants, their partners or proprietor as the case may be, their assigns in the business, servants and agents, from manufacturing, printing, marketing, offering for sale, using, advertising, directly or indirectly dealing in impugned PRESTIGE pouches/packaging of pressure cooker parts or any other pouch or packaging as may be a colourable and slavish imitation or substantial reproduction of PRESTIGE pressure cooker parts packaging/pouching of the plaintiff, in respect of colour combination, get up, lay out and arrangement of features, amounting to infringement of copyright of plaintiff therein including copyright registration No.A-56776/99. b) A decree for permanent injunction restraining the defendants, their partners or proprietor as the case may be, their assigns in business, servants and agents, from manufacturing, printing, marketing, offering for sale, advertising, directly or indirectly dealing in impugned pouches/packaging bearing the trade mark PRESTIGE in relation to pressure cooker parts or any other trademark as may be deceptively similar to the trademark 'PRESTIGE' of the plaintiffs amounting to infringement of trademark registration No c) A decree for permanent injunction restraining the defendants, their partners or proprietor as the case may be, their assigns in business, servants and agents, from manufacturing, printing, marketing, offering for sale, advertising, directly or indirectly dealing in the impugned pouch/packaging under the impugned trademark PRESTIGE in relation to pressure cooker parts or any other mark or pouch/packaging as may be deceptively similar with the trademark as may be likely

4 to lead to confusion or deception amounting to passing off of the defendants' goods/business for those of the plaintiff. d) A decree for delivery up of the infringing goods of the defendants including impugned packaging, articles, stationary, Dies & blocks, etc. bearing the trademark PRESTIGE, to an authorized representative of the plaintiff for destruction/erasure. 4. The only issue left to be decided was: 1. To what damages is the plaintiff entitled to from the defendants?opp 5. This Court had also appointed Local Commissioner at the initial stage at the request of plaintiff to visit the premises of the defendants or any other premises whereby printed goods may be stored and to take into custody counterfeit press cooker, parts, pouches and hand over the same to defendant separately. He was also to sign books of accounts of the defendants including stock register, bill books purchase orders etc. The Local Commissioner was also given authority to break open the lock of any premises. The Local Commissioner visited the premises of defendants in the company of plaintiff representatives. He found a flexo printing machine in the premises on the ground floor, some printing work was being carried on. He found PP Rolls and lot of printed pouches, of plastic. The defendants was shown pouches of the plaintiff and was asked if he was printing such pouches to which the defendants stated that he was having only a flexo printing machine and such pouches are printed on rotogravier printing machine. Such printing was not possible in his premises. Thereafter, Local Commissioner carried on a through search of the premises and in the search 75 pouches of plaintiff's marking were found in a heap of various kinds of polythene materials lying there. When defendant was confronted, he told that they have a machine on first floor for making 'Dana' and they purchased a lot of waste polythene for preparing 'Dana' and the 75 pouches found in the heap may have come in the waste material used for preparing 'Dana'. He alleged that Local Commissioner found 75 found by Local Commissioner though contained mark of prestige but, the same were old pouches. When the defendants were asked to give books of accounts, stock registers etc., the defendant had told that their work was not of such a scale that they maintain these books. 6. In order to prove the damages to be recovered from defendant, plaintiff examined one witness Mr. Lokesh Anjanppa PW-1, who in his affidavit, reproduced the plaint and deposed nothing on the quantum of damages or loss suffered by the plaintiff due to activities of the defendants. In cross examination, he admitted that he had no personal knowledge about counterfeiting of trademark by defendant and he was not working in the plaintiff's company at the time when this cause of action had

5 taken place. The plaintiff closed its evidence after examination of this witness. The defendants did not lead any evidence and arguments of both parties were heard. 7. Learned counsel for the plaintiff submitted that the plaintiff has claimed punitive damages and the report of the Local Commissioner established that the defendant was using trademark of the plaintiff. Although there was no exact information available about the sale figures and the extent of the business being done by defendants, but still the plaintiff was entitled to punitive damages. He submitted that the punitive damages must be exemplary so that such fraud is not perpetuated by anyone on the public. He submitted that the activities of the defendants of manufacturing counterfeit pouches was very dangerous for the public health. The gasket and other spare parts which are marketed by plaintiff, are made of high quality material, because food is to be cooked in the pressure cookers and use of spurious material can turn the food into poison or the pressure cooker can burst due to faulty valve, resulting into a fatal accident. He prayed that Court, therefore, should impose exemplary punitive damages. He relied upon (2006) 32 ITC 682, Delhi, AIR 1985 Delhi B.K. Eng. Company vs.... and (2005) 30 PTC A perusal of the plaint filed by plaintiff would show that the plaintiff had made no claim for punitive damages in the plaint. The only prayer made by the plaintiff is that this Court pass an order of rendition of accounts of profit and loss by the defendants and a decree for the amount of profit carried by defendant or a decree of appropriate damages in the alternative may be passed and an order for cost in the proceedings be passed. A perusal of the affidavit of the witness of plaintiff would show that in the affidavit, plaintiff witness has, though asked for punitive damages, but has given no evidence. In fact the scale at which the work was being done by the defendants was very small. The report of Local Commissioner would show that the defendant was doing jobs work only with one flexo printing machine and despite search done by Local Commissioner in company of plaintiff's representative, the Local Commissioner could only find 75 pouches, that also from a heap of pouches, not stocked for sale. The plaintiff failed to examine the Investigator who allegedly purchased 1000 pouches from defendants to show that the defendants were doing manufacturing of the counterfeit pouches at a large scale. Looking into the scale of business at which the defendants were operating being very small and defendants doing only job work and the plaintiff having made no prayer for punitive damages in its plaint, 9. I consider that the only damages against loss can be imposed upon the defendants. I, therefore, impose a damage of Rs.25,000/- on the defendants. The

6 defendants are also directed to pay the cost of the suit to the plaintiff which quantifies at Rs.35,000/-. A decree sheet accordingly be prepared. Sd/- SHIV NARAYAN DHINGRA,J